PRIME, while having the distinction of being the world's strongest super human
(within the ULTRAVERSE), is powerless by himself against infringers. PRIME
is smart, in spite of his tender age of thirteen years, because he knew
he needed trademark and copyright protection (which is also fortunate for
this author because it got him a real job). In this article, PRIME has agreed
to disclose and discuss several strategies for protection against potential
infringers.

CLEARANCE

Even before PRIME has an identity of his own,
it must be determined whether his name is available. The first step in this
regard is to perform a screen search with an on-line service, e.g., TRADEMARKSCAN
or COMPU-MARK ON-LINE. In the case of PRIME, who has his own titled comic
book series, a search of the federal register for PRIME in International
Class #16 (hereinafter, Class) would be necessary. In addition, because
PRIME is a titled character, other merchandisable classes should also be
screened, including but not limited to, Classes #9, 24, 25, and 28 (more
information on these latter classes will be discussed below). If the screen
search reveals no obvious conflicts, then the next step would be to order
a full search from any one of several trademark research companies, e.g.,
CORSEARCH, and THOMSON & THOMSON. This full search can search several
classes. If the full search indicates that the mark searched still appears
to be clear of any potential conflicts, then it is reasonable to move to
the next step.

TRADEMARK

The time is now at hand to prepare trademark applications. Because PRIME will first be marketed in the United States, it is best to seek registration with the Patent and Trademark Office of the Federal Government
(hereinafter, Trademark Office). Since PRIME is primarily and foremost a
comic book character with his own titled comic book series, the first trademark
application will be in Class #16 for comic books, trading cards, posters,
printed milk caps, and other printed matter. The other classes to consider
(and a listing of some of the goods to be considered) are as follows:

Class #28
- for toys, games, and playthings; namely, action figure
toys and accessories therefor, toy vehicles, hand-held units for playing
electronic and video games, (note: computer game programs, including downloadable
software from a global computer network are now registrable in Class #9),
dolls and puppets and accessories therefor, stuffed and plush toys.

The next decision to be made after selecting
the appropriate classes in which to file is the type of mark to be applied
for, i.e., typed and/or stylized format. The typed format, for the drawing
page to be included with the application, provides the broadest protection
as the registration which issues allows one to use the mark in any style
or font. The stylized drawing is in logo format and the user is limited
to protection in this design format only. PRIME has protection in the broader
category as he is registered in typed format.

Other applications as referenced above were
also prepared for PRIME since the potential for merchandising this character
is considerable. Therefore, intent-to-use applications (ITU) were prepared
in Classes #9, 16, 24, 25, and 28. The ITU method was chosen because at
the time the plans were drawn up to exploit the character PRIME there was
no use in commerce to support a use based trademark application. In the
case of PRIME, within several months after the preparation of the ITU application
in Class #16, the first issue of PRIME was shipped and sold in interstate
commerce. Soon thereafter, a Statement of Use was filed with the Trademark
Office with a Certificate of Registration issued several months later. Once
the registration issued PRIME was also able to use the official trademark
notice after his name, namely, PRIME®. Prior to registration only the
symbol should be used.

Had PRIME been infringed prior to the date
of his federal registration, then PRIME could have sought recovery in Federal
Court under § 43 (a) of the Lanham Act (15 U.S.C. § 1125 (a))
which prohibits acts of false designation of origin. In addition, there
are state law theories available in state court for dilution, state or common
law trademark infringement, as well as idea misappropriation in some jurisdictions.

COPYRIGHT

Another strategy for protecting the comic book
character PRIME is copyright law. Under the U.S. Copyright Statute (17 U.S.C.
§ 101 et seq.), works of visual art are protectible from the moment
of their inception on any tangible medium. This means that the visual or
graphic depiction of PRIME is protectible, even without registration with
the Copyright Office in Washington, D.C. In the case of PRIME, however, the decision was made to register each issue of PRIME by preparing FORM VA for
comic books (for both the art and the text), in addition to separately registering
PRIME posters and trading cards. It should be noted that copyright does
not protect the title or the name, PRIME, but rather in this particular
case the art and/or text.

CONCLUSION

Enforceability will depend upon the extent
to which a company invests in and follows through on the above strategies.
Trademark would seem to be the most prevalent and important strategy in
connection with the comic book industry. Copyright protection and registration
is also important, yet the issue of substantial similarity has not seen
as much play in this arena. In fact, there are several notable artists who
frequently pay"tribute" to other artists by copying their style
and poses.

Such instances usually go unresolved with litigation
being the only way to determine actual infringement. In any case, such common
features as rippling muscles, body suits, capes and hair styles are not
in and of themselves protectible under copyright law.

Recognizing that a comic book character has
tremendous ancillary potential in terms of merchandising is paramount. The
comic book itself is just the beginning of what fruit such a character may
bear. This being the case, a trademark and copyright lawyer must be ready
to advise his/her client as to what steps are necessary to protect these
characters. While not intended to be all inclusive, and with PRIME retaining
several strategies up his bodysuited sleeves, this article has attempted
to demystify several strategies for protecting comic book characters.

CAVEAT: The reader is advised to check this hotlink of changes in the U.S.
Patent and Trademark Office with respect to certain goods and services,
esp.with respect to Class #9, 28, and 42 as they apply to computer software,
video games, and internet web sites.